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Canada's Supreme Court Tosses Viagra Patent For Vagueness

samzenpus posted about 2 years ago | from the be-specific dept.

Canada 100

Freshly Exhumed writes "In a 7-to-0 decision, the Supreme Court Of Canada has ruled that Pfizer Canada Inc.'s patent on well-known erectile dysfunction remedy Viagra is now invalid due to insufficient information in Pfizer's patent application. The upshot is that competitors can now manufacture cheaper, generic versions of Viagra for sale in Canada."

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Uh oh (-1)

Anonymous Coward | about 2 years ago | (#41927479)

Boner jokes in 3...2...1...

Re:Uh oh (2, Funny)

Anonymous Coward | about 2 years ago | (#41927513)

True. I believe there will be stiff competition in the effort to erect new boner jokes. I just hope they can stick to the thrust of the story.

Re:Uh oh (0)

Anonymous Coward | about 2 years ago | (#41927561)

I got a hard-on just reading the summary!

Re:Uh oh (1)

isopropanol (1936936) | about 2 years ago | (#41928435)

All the curlers are gonna rush to the pharmacy. They're all in a hurry, hurry hard!

Re:Uh oh (1)

Chrisq (894406) | about 2 years ago | (#41929921)

Boner jokes in 3...2...1...

The lawyers for Viagra were working pro boner

Re:Uh oh (2)

JohannesJ (952576) | about 2 years ago | (#41930253)

I'm a German reader. Is this Enhancement stuff for Dich or Dick?

Re:Uh oh (1)

S.O.B. (136083) | about 2 years ago | (#41933415)

Good to see the Supreme Court of Canada has such a firm grasp of patent law.

Whammy (1)

Anonymous Coward | about 2 years ago | (#41927483)

Sounds like there will be some new stiff competition!

A surprising post. (2)

brindafella (702231) | about 2 years ago | (#41927501)

I was so surprised to come across this story!

Re:A surprising post. (5, Funny)

Greyfox (87712) | about 2 years ago | (#41928211)

If you stay surprised for more than 4 hours, you should contact a doctor.

Insufficient information (4, Funny)

mattack2 (1165421) | about 2 years ago | (#41927505)

So the Supreme Court Of Canada found the patent hard to understand.

Maybe they require photos? (0)

Anonymous Coward | about 2 years ago | (#41927549)

Figure A: flaccid penis
Figure B: man consuming pill
Figure C: erect penis
Figure D: smile on woman's face

Too juvenile? Perhaps, but how am I supposed to react to this!?

Re:Maybe they require photos? (4, Informative)

Samantha Wright (1324923) | about 2 years ago | (#41928737)

No, a chemical patent has to be very specific about the range of structures that are patented. A good chemical patent may contain sentences that are over a hundred words in length, just listing out alternative functional groups that could be at a given spot on the backbone. They're very technical and extremely detailed; you can't just patent a cause-and-effect relationship like that. In software, maybe, but not in pharmacology.

Re:Maybe they require photos? (1)

ColdWetDog (752185) | about 2 years ago | (#41930633)

That section of the patent office must be where dead Organic chemists go when they've been assigned to Hell.

Re:Insufficient information (3, Funny)

Goodyob (2445598) | about 2 years ago | (#41927799)

Guess they didn't have enough evidence to be firm about the issue

Re:Insufficient information (5, Informative)

Maow (620678) | about 2 years ago | (#41927963)

So the Supreme Court Of Canada found the patent hard to understand.

You can believe that if it makes you feel good, but reality says otherwise, that the patent was purposefully obfuscated:

"Pfizer gained a benefit from the act -- exclusive monopoly rights -- while withholding disclosure in spite of its disclosure obligations under the act," Justice Louis LeBel wrote on behalf of the court.

"As a matter of policy and sound statutory interpretation, patentees cannot be allowed to 'game' the system in this way. This, in my view, is the key issue in this appeal.

"Pfizer had the information needed to disclose the useful compound and chose not to release it."

So, no one could "understand" it because they didn't disclose proper information - enough for someone skilled in the profession to create a copy of the drug.

It's a remarkably sensible decision and one that should be applied in US courts - particularly in the current mobile patent war (the part about not being allowed to "game the system").

Re:Insufficient information (2)

mattack2 (1165421) | about 2 years ago | (#41928611)

I was just making a stupid joke.. I guess I should have said "So the Supreme Court Of Canada found the patent hard. . . to understand."

Re:Insufficient information (1)

Maow (620678) | about 2 years ago | (#41928631)

I was just making a stupid joke.. I guess I should have said "So the Supreme Court Of Canada found the patent hard. . . to understand."

Oh, fair enough.

Maybe I should have blamed the moderation system -- the mods marked it as +3 Informative as of right now.

Cheers

Re:Insufficient information (1)

girlinatrainingbra (2738457) | about 2 years ago | (#41928725)

edit that might have made the joke more apparent:

...should have said "So the Supreme Court Of Canada found the patent hard. . . to understand... for four hours, after which they called their doctors"

Re:Insufficient information (1)

Smallpond (221300) | about 2 years ago | (#41928917)

mod parent ... er ... up!

Re:Insufficient information (1)

Anonymous Coward | about 2 years ago | (#41927977)

The patent didn't fill in the missing part here:
3. ???
4. profit!

Re:Insufficient information (0)

Anonymous Coward | about 2 years ago | (#41931247)

The patent *is* the missing part there.

Re:Insufficient information (2)

Formalin (1945560) | about 2 years ago | (#41927997)

If the patent isn't understandable by someone proficient in the field, it is invalid. I'd imagine the Supreme court had called up experts.

The radio said - patent described several chemical structures, but neglected part of the process or which one was the final patented product, something along these lines. Which would be unrelated to the hard to understand part.

Re:Insufficient information (3, Informative)

reverseengineer (580922) | about 2 years ago | (#41928533)

Yes, Teva's central argument in the challenge was that in the patent in question, Pfizer never specifically establishes the relationship between sildenafil and the treatment of ED. From the judgement [canlii.ca] :

As required by s. 2 of the Act, an invention must be novel. In the instant case, the invention is not sildenafil, per se, because this compound was already known. In fact, Pfizer had been investigating sildenafil as a cardiovascular drug when it first suspected that the compound would be useful in treating ED (R.F., at para. 13). The invention is therefore not sildenafil, but the use of sildenafil to treat ED.(italics theirs)

The court ruled that the patent never concretely established this relationship:

Although Patent ’446 includes the statement that “one of the especially preferred compounds induces penile erection in impotent males” (A.R., vol. X, at p. 173), the specification does not indicate that sildenafil is the effective compound, that Claim 7 contains the compound that works, or that the remaining compounds in the patent had been found not to be effective in treating ED. The claims were structured as “cascading claims”, with Claim 1 involving over 260 quintillion compounds, Claims 2 to 5 concerning progressively smaller groups of compounds, and Claims 6 and 7 each relating to an individual compound.

The disclosure in the specification would not have enabled the public “to make the same successful use of the invention as the inventor could at the time of his application”, because even if a skilled reader could have narrowed the effective compound down to the ones in Claim 6 and Claim 7, further testing would have been required to determine which of those two compounds was actually effective in treating ED. As the trial judge stated, at para. 146, “[a] skilled reader would then conduct tests on those two compounds and determine which of those compounds worked.” And as he also stated, at para. 135, “the skilled reader must undertake a minor research project to determine which claim is the true invention”.

Pfizer had the information needed to disclose the useful compound and chose not to release it. Even though Pfizer knew that the effective compound was sildenafil at the time it filed the application, it limited its description to the following statement: In man, certain especially preferred compounds have been tested orally in both single dose and multiple dose volunteer studies. Moreover, patient studies conducted thus far have confirmed that one of the especially preferred compounds induces penile erection in impotent males. [Emphasis added; A.R., vol. X, at p. 173.] It chose a method of drafting that failed to clearly set out what the invention was. Even now, in its factum to this Court, Pfizer offers no explanation as to why — knowing that Claim 7 contained the tested and thus, the useful, compound — it elected to withhold that information.

Re:Insufficient information (2)

AchilleTalon (540925) | about 2 years ago | (#41929565)

The Supreme Court decision intent to relax the suffering conditions of many Canadians due to the NHL lock-out. It should be seen as its contribution to ease these hard times with a little slack in the pockets of the poor Canadians deprived from the national sport show.

Re:Insufficient information (1)

silentcoder (1241496) | about 2 years ago | (#41930153)

> to ease these hard times
Actually, that sounds like the exact opposite of what they were aiming for...

Re:Insufficient information (1)

Anonymous Coward | about 2 years ago | (#41930561)

No. If you read the details, the issue was the way that the patent described multiple chemicals without narrowing in on exactly which one was the active ingredient. It turns out it's only one of them. In other words, when they filed the patent they didn't know what made it work, or intentionally chose to obfuscate which one made it work. According to the court, it's the latter. That's grounds for invalidating it, especially if it was an intentional thing. No disclosure, no monopoly for you!

Re:Insufficient information (0)

Anonymous Coward | about 2 years ago | (#41930725)

pfizer included every known compound to man in the patent application.

Kinda like saying salt is made out of sodium, chlorine, mercury, iron , nickle , zinc bromine, cocaine, caffeine, chloride , trinitrotoluene... .

And the Supreme court went. No it's not.

No. (1)

DarthVain (724186) | about 2 years ago | (#41933183)

The Supreme Court of Canada is made up of old men who arn't dumb.

Ha! Cheap penis drugs for everyone!

Re:No. (1)

mattack2 (1165421) | about 2 years ago | (#41934677)

But they already have socialized medicine⦠aren't they already cheap (i.e. "free")? (Yes, I'm avoiding the fact that it really means everyone ELSE is paying for it. Why people should subsidize ANYTHING relating to other people getting their jollies mystifies me.)

Re:No. (1)

Guspaz (556486) | about 2 years ago | (#41940455)

Medicare in Canada does not provide drugs unless you're in hospital. There is regulated pricing for drugs that keeps the prices reasonable, but that's not subsidization. Canadians have to pay for their drugs.

Health care in Canada is a provincial jurisdiction (the federal government has zero direct influence on health care), and it's not mandatory for a province to offer universal health care. The federal government offers financial incentives to the provinces if their health care system meets certain criteria however, so every province does offer universal healthcare. But tomorrow they could decide to adopt a US style system whatever the Canadian government says. There would be enormous backlash, however. Unlike Americans, Canadians generally think universal healthcare is important.

To get back to drugs, my province (Quebec) has a mandatory policy for prescription drug insurance. You're required to have such insurance, either through the government plan, or a private health insurance plan. My employer has us on a group plan that pays half my prescription drug costs. It used to cover all the cost, but premiums were going to go up so my employer it coverage to keep them the same.

Pfizer's response (0)

Anonymous Coward | about 2 years ago | (#41927507)

The Supreme court had a hard-on to screw us.

Re:Pfizer's response (1)

ark1 (873448) | about 2 years ago | (#41927671)

Don't be too vag next time.

Re:Pfizer's response (1)

pnutjam (523990) | about 2 years ago | (#41932359)

yeah, don't be a vag, and don't be vague either.

One more reason... (0)

Anonymous Coward | about 2 years ago | (#41927515)

to move to Canada

Re:One more reason... (0)

Anonymous Coward | about 2 years ago | (#41928013)

to move to Canada

Beware, those Canadians have taxes and a universal health care system.

Proudly (3, Funny)

p0p0 (1841106) | about 2 years ago | (#41927517)

Honey, grab the maple syrup and the cheap viagara. We're celebrating.

Now, if only we looked at Apple's patents then we can really stir some shit up.

Re:Proudly (2)

mrbluze (1034940) | about 2 years ago | (#41927673)

Honey, grab the maple syrup and the cheap viagara. We're celebrating. Now, if only we looked at Apple's patents then we can really stir some shit up.

The "upshot" of which would be an Icecream Sandwich: http://www.gizchina.com/wp-content/uploads/images/apple-android-rival-blow-job-sign-china.jpg [gizchina.com]

Re: Why Bother,,,,, (1)

Slugster (635830) | about 2 years ago | (#41929357)

Why bother even buying Viagra now? It's going to come in maple syrup anyway.

In unrelated news, Hooter's will now be open for breakfast....

O Canada, we cum on thee... (1, Funny)

inode_buddha (576844) | about 2 years ago | (#41927557)

Canada: there's a lot of beaver up there.
.

Generic name (5, Funny)

Anonymous Coward | about 2 years ago | (#41927593)

Now that there will be generic Viagra, there will be the issue of selecting a generic name. The leading candidate based on Internet searches is "Mycoxaphalin."

Re:Generic name (2)

ArcadeMan (2766669) | about 2 years ago | (#41927945)

My vote goes to Viagrow.

Re:Generic name (5, Funny)

JustOK (667959) | about 2 years ago | (#41928079)

Penisfillin

Re:Generic name (5, Funny)

symbolset (646467) | about 2 years ago | (#41928489)

V!gara. They can sell it by email.

Re:Generic name (1)

brindafella (702231) | about 2 years ago | (#41928881)

"Willie Wonkie's Shock Factory"

Re:Generic name (1)

brindafella (702231) | about 2 years ago | (#41928901)

> "Willie Wonkie's Shock Factory" The pseudo-medicininal name would be "Williin".

Re:Generic name (2)

brindafella (702231) | about 2 years ago | (#41928919)

Alternative: "Mycoxafillin".

Re:Generic name (2)

Anonymous Coward | about 2 years ago | (#41929831)

They will be marketed as "AntiFlaccids"

Re:Generic name (2)

gtvr (1702650) | about 2 years ago | (#41931085)

Based on my emails, it could easily be V1agra, Vi4gra, or other similar. There's already brand familiarity & everything.

Fantastic (5, Insightful)

Tragek (772040) | about 2 years ago | (#41927597)

My favourite part of the whole thing:

Writing for a unanimous court, Mr. Justice Louis LeBel said that the quid pro quo of patent legislation dictates that inventors can have an exclusive monopoly on a product provided they forthrightly disclose how it operates.

"If there is no quid – proper disclosure - then there can be no quo – exclusive property rights," he said.

Damn straight.

'Non Obviousness' next (0)

Anonymous Coward | about 2 years ago | (#41927955)

Next up, fix the 'obvious' and 'prior-art' tests in the USA.

The Supremes ruled an invention must be more than the sum of its parts (so not just Apple's game of patenting things 'on a phone' that were done 'on a computer'). The Patent Appeals court mawled that down to the joke it is today.

A lot of patent trolls/abusers use that to get comedy patents.

Follow the Canadians!

Re:'Non Obviousness' next (0)

dnwheeler (443747) | about 2 years ago | (#41936479)

An "obviousness test" is actually pretty simple. Since an invention must actually do something, you can just ask some experts in the field to come up with every way they can think of to do the same thing. If they come up with the original invention, then it was obvious and shouldn't be patentable.

Another situation that can't be so easily tested, but should make an "invention" unpatentable are those that are "discovered" by brute force. If someone (randomly?) tries known/existing drugs against various conditions, and one works (for any value of "works"), there wasn't really any invention, just discovery of something that already existed.

Re:Fantastic (1)

MrBigInThePants (624986) | about 2 years ago | (#41928705)

Of course for UK readers what she said could be reinterpreted as:

If there is no quid, then there is no Quid.

http://en.wikipedia.org/wiki/Quid [wikipedia.org]

Re:Fantastic (1)

mrbester (200927) | about 2 years ago | (#41929531)

Now, now, Agent Starling, we understand quid pro quo just fine...

Re:Fantastic (0)

Anonymous Coward | about 2 years ago | (#41930547)

Are you saying that UK libraries don't provide free access to French encyclopedia [wikipedia.org] ?

Re:Fantastic-Proper Disclosure (1)

northerner (651751) | about 2 years ago | (#41932931)

One problem with software patents is that they are vague and applied too widely for litigation.

The lawyer speak used for patent applications obscures the technology details.

Proper disclosure for all patents should be sufficient technical detail that the invention can be reproduced. For software patents, source code demonstrating the invention should be supplied.

From the article (1)

JonySuede (1908576) | about 2 years ago | (#41927603)

Teva challenged the validity of the Pfizer patent, claiming it did not meet the law's disclosure requirements.

Software next (4, Insightful)

EmperorOfCanada (1332175) | about 2 years ago | (#41927613)

Now if the US supreme court could apply the same level of common sense and justice to the software patent problem it would be a real turn on (I couldn't help myself).

It looks like this decision is that a greedy company tried bending the rules and were punished. Normally the sense that I get from situations like these that such judgements don't happen because of the whole corporations are the backbone of the country crap so the punishments are usually a tiny portion of the profits from the misbehavior. To lose the viagra patent ought to deflate their profits in Canada (still can't stop).

This is the magical aspect of modern corporations they think that it is somehow good to work every angle, to twist every law, and bend every regulation. It is almost as if they feel bad about themselves if they aren't screwing someone somehow. This is a perfect case in point. Viagra is the wet dream of any big Pharma (on a roll now) a normal patent would have been solid and made them bazillions of dollars; but no they had to squeeze another nickle or dime out of the patent so they risked it all. Viagra also fell into their lap as it was a crappy heart drug that had an interesting side effect. If I were a major shareholder I would demand that the company reevaluate itself to see if a more ethical approach would result in less overall risk.

Re:Software next (1)

Anonymous Coward | about 2 years ago | (#41927817)

If I were a major shareholder I would demand that the company reevaluate itself to see if a more ethical approach would result in less overall risk.
 
Well, seeings as how stupid this statement is we can all sleep well knowing you'll never be a major shareholder in any company that can front nearly a billion dollars every time they try to bring a medication to market.

Re:Software next (0)

Anonymous Coward | about 2 years ago | (#41927913)

They could have properly filed the patent and got dinged for not doing it. Considering the value of the product them obfuscating the patent application was stupid and the company got burned for it. If I was a shareholder I would be mad that they lost me a bunch of money for no good reason.

Re:Software next (-1)

Anonymous Coward | about 2 years ago | (#41927965)

Who the hell died and made you emperor. Lack of detail in a patent that is only 2 years away from public domain is hardly working an angle.

Re:Software next (1)

Obfuscant (592200) | about 2 years ago | (#41927969)

This is a perfect case in point. Viagra is the wet dream of any big Pharma (on a roll now) a normal patent would have been solid and made them bazillions of dollars; but no they had to squeeze another nickle or dime out of the patent so they risked it all.

I'm sure that Big Pharma has patent lawyers on staff, and that not being explicit enough in this patent saved them nothing. This is more a perfect case in point of "mistake", I think, or "in our opinion", than of some greedy company bending rules. The lawyers almost certainly would have thought they were being explicit enough to meet the rules (because not getting the patent would cost a bundle), and the judges had a differing opinion.

In fact, since there would be a danger of being too vague, and being more explicit costs them nothing, they have no reason not to be explicit. I mean, the patent stops other manufacturers, and it isn't like other Big Pharmas don't know or couldn't figure out how to make Viagra without a more explicit patent.

Re:Software next (0)

Anonymous Coward | about 2 years ago | (#41929827)

The lawyers almost certainly would have thought they were being explicit enough to meet the rules

And that is why you do not yet lawyers write patent applications.

Re:Software next (1)

Theaetetus (590071) | about 2 years ago | (#41931491)

The lawyers almost certainly would have thought they were being explicit enough to meet the rules

And that is why you do not yet lawyers write patent applications.

And careful attention to detail is why you don't let anonymous cowards write them either.

But the US Supreme Court doesn't need.... (1)

kawabago (551139) | about 2 years ago | (#41928251)

The US Supreme Court doesn't need a cheap source of software patents!

Re:Software next (1)

lord_rob the only on (859100) | about 2 years ago | (#41930521)

To lose the viagra patent ought to deflate their profits in Canada (still can't stop).

Yes of course, if there are more generics made to inflate people's penis, but it's a risky market.

Re:Software next (2)

Theaetetus (590071) | about 2 years ago | (#41931477)

Now if the US supreme court could apply the same level of common sense and justice to the software patent problem it would be a real turn on (I couldn't help myself).

Maybe you should've read the article rather than rushing to pull out your penis joke. The decision here was that a person of ordinary skill in the art reading the patent wouldn't have known which drug caused erections, and therefore, the patent didn't include enough written disclosure to enable a person of ordinary skill to practice the invention.
That doesn't really apply with software patents, because if you're a programmer who can't follow a flow chart, then you probably don't represent the skill of an ordinary person in the art.

In other news... (0)

Anonymous Coward | about 2 years ago | (#41927677)

Canada's supreme court is made up mostly of old men who are sick of paying high prices for brand name drugs

SNIFF POPPER !! (-1)

Anonymous Coward | about 2 years ago | (#41927691)

Or LockerRoom !!
Or Willie Nelson's bus !!
All the same schtuff !!

A hard verdict for Pfizer (3, Funny)

heretic108 (454817) | about 2 years ago | (#41927723)

But the Supreme Court had no choice but to stand up for justice. No going soft on patent abuses!

On behalf of all Canadian Men (2)

rueger (210566) | about 2 years ago | (#41927755)

Yeah, like we even need that stuff....

Re:On behalf of all Canadian Men (3, Funny)

jbeaupre (752124) | about 2 years ago | (#41927823)

Yeah, like we even need that stuff....

If you Canadians have lost your interest in sex, you could consult your doctor. Pfizer probably a drug for that too.

No more declining population (0)

Anonymous Coward | about 2 years ago | (#41927763)

Perhaps this will fix the declining population !?!?

Re:No more declining population (1)

siddesu (698447) | about 2 years ago | (#41927947)

Not unless the decision also mandates a comprehensive ban on abortions and contraception.

Re:No more declining population (0)

Anonymous Coward | about 2 years ago | (#41929837)

Not unless the decision also mandates a comprehensive ban on abortions and contraception.

I would support such a ban. I'd get a lot more anal.

Re:No more declining population (1)

Anonymous Coward | about 2 years ago | (#41930435)

Sorry, but straight men would just use other contraception methods instead of going for a fat guy's ass.

Wow, great decision! (1)

russotto (537200) | about 2 years ago | (#41927789)

I'm excited just thinking about it!

Something tells me (0)

Anonymous Coward | about 2 years ago | (#41927811)

Some entrepreneur is going to make a ton of money setting up an airline with flights between Colorado and Canada.

Generic Canadian Pharmacys (1)

AG the other (1169501) | about 2 years ago | (#41927815)

So now we will be able to order generic Viagra from Canadian pharmacists. Exactly where and what is the change from things as they are?

Re:Generic Canadian Pharmacys (0)

Anonymous Coward | about 2 years ago | (#41927895)

No, that's still a violation of the law in the US. I'm pretty sure that the FDA would have something to say about importing medications from abroad without proper approval. And customs can seize any such shipments.

Re:Generic Canadian Pharmacys (1)

number11 (129686) | about 2 years ago | (#41928573)

No, that's still a violation of the law in the US. I'm pretty sure that the FDA would have something to say about importing medications from abroad without proper approval. And customs can seize any such shipments.

The FDA may have something to say about it, but AFAIK the US government doesn't choose to make it an issue, probably because they'd then have to defend the fact that the pharma industry gouges US customers with prices that are twice what they charge for export. I'm sure most of the Canadian mail-order pharmacies will sell it to you. I bought lovastatin (generic Lipitor) that way for years (when your drugs are 100% out of pocket, it pays to shop around). They also sold grey-market Lipitor for about 2/3 of what it costs in the US (manufactured by Pfizer in Australia, shipped from pharmacies in various countries). The generic was about 1/3 the US Lipitor price and was manufactured in India. And while I'm a little leery of Indian drugs (they're perfectly capable of making quality drugs, but there are a lot of counterfeits too), this stuff worked fine. And in 10 or so years I never had a shipment seized or held up.

Re:Generic Canadian Pharmacys (0)

Anonymous Coward | about 2 years ago | (#41928281)

It might be cheaper as it is now legal to get the generic version in Canada now instead of 2014.

Generics and Legal Challenges (5, Informative)

reverseengineer (580922) | about 2 years ago | (#41927853)

This particular patent fight is also occurring in other places. In the US, there was a decision last year between Pfizer and Teva that was ruled the opposite way, and if no other challenge is successful, I believe Viagra will continue to exist under patent for Pfizer until 2019. At issue is that Viagra really has two patents- one for sildenafil and its formulation into a drug and one for the use of sildenafil to treat erectile dysfunction. Sildenafil was originally developed for blood pressure and cardiovascular disease, so the application for the ED indication patent trailed the formulation patent by several years. The formulation patent expired this year, but the indication patent lasts until 2019. In the US, a regulatory framework known as a Paragraph IV challenge [fda.gov] exists for generic drug manufacturers to either argue that their proposed generic does not violate the existing patents, or that the patents themselves are invalid. This potentially allows them to open up the generic market years before the patent was originally set to expire, so this sort of legal action is not uncommon, particularly for blockbuster drugs.

Re:Generics and Legal Challenges (4, Informative)

reverseengineer (580922) | about 2 years ago | (#41928329)

Just to follow on, the Canadian Supreme Court decision is here [canlii.ca] and the invalidated patent is here [ic.gc.ca] . What caused the patent to be invalidated was that the patent is basically written to cover a wide array of similar molecules, all derivatives of a central molecular skeleton. Often, minor alterations to a molecule can be made that do not change the behavior of the molecule as a drug. What it appears Pfizer was looking to do here was prevent competitors from developing ED drugs that were simple derivatives of sildenafil (Viagra) (like adding a methyl group or a fluorine atom somewhere it would have no significant effect). That's considered acceptable strategy, and as a result, other ED drugs like vardenafil (Levitra) and tadalafil (Cialis) have differences in their core structures that keep them from infringing.

However, the Canadian court found that Pfizer had failed to essentially zero in on sildenafil with their claims. When it came down to actually stating that this molecule is the one that lab studies have found treats ED, Pfizer only ever mentions the core skeleton (known as "formula I") and never uniquely identifies sildenafil. It mentions sildenafil (not even by name, only by its R groups) in one claim, but never connects it and only it to ED. The court judgement notes that "formula I" represents 260 quintillion possible compounds, and therefore rejected the patent for vagueness.

Re:Generics and Legal Challenges (3, Funny)

ColdWetDog (752185) | about 2 years ago | (#41930663)

Good, you write the next summary in this field.

Please.

Re:Generics and Legal Challenges (1)

Alex Belits (437) | about 2 years ago | (#41928511)

Last time I have checked, patents cover inventions implemented as devices and methods. Re-use of the same device for a different purpose is not in itself patentable (ex: I can't re-patent LZW algorithm as a new method of storing data in barcodes, even though application is new and algorithm is useful for this purpose).

Re:Generics and Legal Challenges (3, Informative)

reverseengineer (580922) | about 2 years ago | (#41929013)

That's not necessarily true of pharmaceuticals, and in fact, quite a few other blockbuster drugs have come about as re-purposed molecules: Merck originally developed Proscar (finasteride) as a prostate enlargement treatment. Then it submitted finasteride to the FDA again as Propecia for male pattern baldness. Wikipedia tells me, "Merck's patent on finasteride for the treatment of BPH expired on June 19, 2006. Merck was awarded a separate patent for the use of finasteride to treat MPB. This patent is set to expire in November 2013." Bupropion was developed as an antidepressant (Wellbutrin), but there's a separate patent covering Zyban, which is the same molecule when prescribed for smoking cessation. Latisse is the glaucoma drug Lumigan, repurposed when they found it makes your eyelashes grow.
For that matter, Viagra itself is also sold in a different dose as Revatio for pulmonary hypertension- I'm pretty sure that Pfizer's "treatment of erectile dysfunction" patent expiring in 2019 does not apply to that product. I will note that these "use patents" are much more likely to be invalidated in court challenges compared to the "composition of matter" patent (it was considered surprising by many observers when Pfizer won their case with Teva in the US last year), but they are out there.

Re:Generics and Legal Challenges (0)

Anonymous Coward | about 2 years ago | (#41929125)

In Australia in the last I was proscribed an antibiotic in gel form to treat a infected follicle. When at the pharmacy getting it filled they asked if I wanted a generic version intended for use in an eye (exactly the same formulation just a different intended end use) for half the price. I took the locally made generic with a different labelled end use instead of the US BigParma branded one. Even if you had a country where they lost one or the other patent (if they have both there) you could have:

1. doctors saying you need blood pressure tablets (wink wink) containing Sildenafil not Viagra
2. doctors saying here's a generic that will do the same thing but it comes in some other kind of pill that looks different and is not blue.
3. pharmacies saying do you want a generic containing the same active ingredient as viagra (if other places are like Australia pharmacies don't push generics out of the goodness of their hearts and your hip pocket it's because they make more money on them than the brand name drugs).

Wait, you're saying this is new? (1)

damn_registrars (1103043) | about 2 years ago | (#41927929)

The upshot is that competitors can now manufacture cheaper, generic versions of Viagra for sale in Canada.

I get email offers on a daily basis from "Canadian Pharmacy" offering to sell me generic Viagra - or Viagra with other ED medications in a "super pack" - all the time. You don't mean to say that some of the email offers I get aren't genuine, do you?

Re:Wait, you're saying this is new? (1)

number11 (129686) | about 2 years ago | (#41928659)

I get email offers on a daily basis from "Canadian Pharmacy" offering to sell me generic Viagra - or Viagra with other ED medications in a "super pack" - all the time. You don't mean to say that some of the email offers I get aren't genuine, do you?

Well, probably not. But seriously, if you verify a pharmacy through someplace like this [pharmacychecker.com] they'll be for real.

Where's the vague? (0)

Grayhand (2610049) | about 2 years ago | (#41928067)

Patent request, "Makes old farts dicks harder". I don't see the vague"

Re:Where's the vague? (1)

Sique (173459) | about 2 years ago | (#41932791)

It's in the What part of "What makes old farts' dicks harder". Pfizer failed to state precisely which of the millions of possible compounds is actually working.

So Now It's Even Cheaper... (1)

FrankDrebin (238464) | about 2 years ago | (#41928779)

to "stand on guard for thee".

Re:So Now It's Even Cheaper... (1)

Mashiki (184564) | about 2 years ago | (#41929919)

Canadian men don't need that "extra help" comes from those cold winters, it helps with the training.

Re:So Now It's Even Cheaper... (0)

Anonymous Coward | about 2 years ago | (#41931761)

Canadian men don't need that "extra help" comes from those cold winters, it helps with the training.

It just makes Canadian men taller.

Great.... (1)

cstdenis (1118589) | about 2 years ago | (#41929525)

more generic viagra spam in 3...2...

Sounds to me... (0)

Anonymous Coward | about 2 years ago | (#41931117)

...like the 7 judges were tired of paying a lot for their little blue pills they used to get it up with the whores on the weekend, so they collectively said "let's screw Pfizer....save us some money!" and did just that

Apple Profits? (0)

Anonymous Coward | about 2 years ago | (#41931691)

Look for Apple to include Viagra in the next I-Phone.

Makes sense for allowing cheap generic viagra,,, (1)

TheSkepticalOptimist (898384) | about 2 years ago | (#41935927)

considering the average age of the men in the Supreme Court of Canada is 62.

As you can see, it wasn't so HARD (1)

davydagger (2566757) | about 2 years ago | (#41936745)

It was a HARD decision to make, but the courts in Canda felt they had to ERECT statues to protect the populace from patent abuse. Pfizer now has to compete in the market, and the competition is sure to be STIFF.
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